Xerox Secures Reviews Of 'Patent Troll's' Scanner Patents

[Anonymous]

Xerox Secures Reviews Of 'Patent Troll's' Scanner Patents
By Allissa Wickham
Law360, New York (August 26, 2014, 6:12 PM ET) — The U.S. Patent and Trademark Office’s trial board Monday opted to institute inter partes reviews of two virtual copier patents owned by so-called patent troll MPHJ Technology Investments LLC after requests from Xerox Corp. and others, finding there was a reasonable chance their challenged claims might be found unpatentable.

A three-judge panel of the Patent Trial and Appeal Board ruled that there was a “reasonable likelihood” that petitioners Xerox, Ricoh Americas Corp. and Lexmark International Inc. would prevail on their unpatentability arguments regarding MPHJ’s two copier patents, U.S. Patent Numbers 8,488,173 and 7,477,410.

The panel specifically ruled that the challenged claims might be shown to be anticipated by 1995 Xerox information manual and a 1996 information distribution patent, and obvious over both that patent and a separate computer communication patent.

Xerox, Ricoh and Lexmark filed for inter partes review of the ‘173 and ‘410 patents March 25, arguing that MPHJ’s patents claimed nothing more than a “well-known concept” for allowing PC users to add electronic paper processing to their existing business process, according to the petitions.

“At least a decade before the alleged effective filing date of the ’410 patent, Xerox was already publicly using the disclosed and claimed technology,” the petitioners claimed. “Many others since 1985 have also utilized this simple technology.”

According to the PTAB, the ‘173 and ‘410 patents cover a system that allows a computer to scan paper from a device, and copy an electronic version of it to another remote device. Both patents are continuations of patents for which the PTAB has already instituted inter partes review, the panel said.

MPHJ filed a July response to the petition regarding the ‘173 patent, which marks at least the second time that Xerox has sought to invalidate one of its patents. The nonpracticing entity claimed in its response that the 1985 Xerox manual did not anticipate its 2013 patent, pointing out that it failed to disclose the details of an “actual software application.”

The company, which has been deemed a patent troll by the Vermont Attorney General’s Office, also argued that the petitioners would prevail on their obviousness clams. MPHJ did not file a preliminary response to the review petition for its ’410 patent, the PTAB said.

In its rulings deciding to institute the reviews, the PTAB panel noted that the ‘173 and ‘410 patents are allegedly involved in slew of infringement actions, including suits against Coca-Cola Co. and Dillards Inc. MPHJ filed those suits in January, alleging in the Coca-Cola suit that the beverage company's information technology system allows its nearly 150,000 employees to use scanners in a way that infringes the patents.

The company had previously focused its efforts on demand letters, often seeking $1,000 per employee from small companies and nonprofits, and until last week's suits, had only ever sued one company for patent infringement.

As a result of the letters, officials in Nebraska, Vermont and Minnesota have mounted investigations of MPHJ, alleging the demand letters it sends to small businesses and nonprofits include baseless or misleading infringement allegations that may violate state consumer protection laws.

Minnesota's attorney general reached a settlement with MPHJ last year that requires its demand letters to be reviewed by state officials, and the attorney general of Vermont sued MPHJ in May 2013 alleging violations of the state's consumer protection laws.

The Federal Circuit recently tossed MPHJ's appeal arguing the case involves federal patent law, meaning that the case will now be heard in Vermont state court.

Attorneys for the petitioners and MPHJ did not immediately respond to requests for comment Tuesday.

The patents-in-suit are U.S. Patent Numbers 8,488,173 and 7,477,410.

The petitioners are represented by Michael D. Specht and Richard M. Bemben of Sterne Kessler Goldstein & Fox PLLC.

MPHJ is represented by Scott A. Horstemeyer and Vivek A. Ganti of Thomas Horstemeyer LLP.

The cases are Ricoh Americas Corp. et al v. MPHJ Technology Corp., case numbers IPR2014-00538 and IPR2014-00539, at the Patent Trial and Appeal Board of the USPTO.

–Additional reporting by Ryan Davis and Bill Donahue. Editing by Chris Yates.

Xerox Secures Reviews Of 'Patent Troll's' Scanner Patents
By Allissa Wickham
Law360, New York (August 26, 2014, 6:12 PM ET) — The U.S. Patent and Trademark Office’s trial board Monday opted to institute inter partes reviews of two virtual copier patents owned by so-called patent troll MPHJ Technology Investments LLC after requests from Xerox Corp. and others, finding there was a reasonable chance their challenged claims might be found unpatentable.

A three-judge panel of the Patent Trial and Appeal Board ruled that there was a “reasonable likelihood” that petitioners Xerox, Ricoh Americas Corp. and Lexmark International Inc. would prevail on their unpatentability arguments regarding MPHJ’s two copier patents, U.S. Patent Numbers 8,488,173 and 7,477,410.

The panel specifically ruled that the challenged claims might be shown to be anticipated by 1995 Xerox information manual and a 1996 information distribution patent, and obvious over both that patent and a separate computer communication patent.

Xerox, Ricoh and Lexmark filed for inter partes review of the ‘173 and ‘410 patents March 25, arguing that MPHJ’s patents claimed nothing more than a “well-known concept” for allowing PC users to add electronic paper processing to their existing business process, according to the petitions.

“At least a decade before the alleged effective filing date of the ’410 patent, Xerox was already publicly using the disclosed and claimed technology,” the petitioners claimed. “Many others since 1985 have also utilized this simple technology.”

According to the PTAB, the ‘173 and ‘410 patents cover a system that allows a computer to scan paper from a device, and copy an electronic version of it to another remote device. Both patents are continuations of patents for which the PTAB has already instituted inter partes review, the panel said.

MPHJ filed a July response to the petition regarding the ‘173 patent, which marks at least the second time that Xerox has sought to invalidate one of its patents. The nonpracticing entity claimed in its response that the 1985 Xerox manual did not anticipate its 2013 patent, pointing out that it failed to disclose the details of an “actual software application.”

The company, which has been deemed a patent troll by the Vermont Attorney General’s Office, also argued that the petitioners would prevail on their obviousness clams. MPHJ did not file a preliminary response to the review petition for its ’410 patent, the PTAB said.

In its rulings deciding to institute the reviews, the PTAB panel noted that the ‘173 and ‘410 patents are allegedly involved in slew of infringement actions, including suits against Coca-Cola Co. and Dillards Inc. MPHJ filed those suits in January, alleging in the Coca-Cola suit that the beverage company's information technology system allows its nearly 150,000 employees to use scanners in a way that infringes the patents.

The company had previously focused its efforts on demand letters, often seeking $1,000 per employee from small companies and nonprofits, and until last week's suits, had only ever sued one company for patent infringement.

As a result of the letters, officials in Nebraska, Vermont and Minnesota have mounted investigations of MPHJ, alleging the demand letters it sends to small businesses and nonprofits include baseless or misleading infringement allegations that may violate state consumer protection laws.

Minnesota's attorney general reached a settlement with MPHJ last year that requires its demand letters to be reviewed by state officials, and the attorney general of Vermont sued MPHJ in May 2013 alleging violations of the state's consumer protection laws.

The Federal Circuit recently tossed MPHJ's appeal arguing the case involves federal patent law, meaning that the case will now be heard in Vermont state court.

Attorneys for the petitioners and MPHJ did not immediately respond to requests for comment Tuesday.

The patents-in-suit are U.S. Patent Numbers 8,488,173 and 7,477,410.

The petitioners are represented by Michael D. Specht and Richard M. Bemben of Sterne Kessler Goldstein & Fox PLLC.

MPHJ is represented by Scott A. Horstemeyer and Vivek A. Ganti of Thomas Horstemeyer LLP.

The cases are Ricoh Americas Corp. et al v. MPHJ Technology Corp., case numbers IPR2014-00538 and IPR2014-00539, at the Patent Trial and Appeal Board of the USPTO.

–Additional reporting by Ryan Davis and Bill Donahue. Editing by Chris Yates.

[Author]

September 2, 2014 at 10:54 AM